Challenges of the Knowledge Society (Jun 2023)
PUBLIC POLICY AND MORALITY IN TRADEMARK LAW
Abstract
The existence of signs registered as trademarks (national, European, international) is necessary in the public interest, as they serve producers of goods and services and consumers alike. While any sign may in principle constitute a trademark if it is capable of distinguishing the goods and services of one undertaking from those of other undertakings and if it can be represented in a register (of trademarks) in such a way as to enable determination of the subject-matter of the protection conferred, the scope of registrable signs is limited by two categories of grounds established by law (EU Regulation) with a view to: (i) the effective protection of the rights previously acquired by other persons and the prevention of the risk of confusion/association between the goods/services of different traders, which are „relative grounds for refusal of registration”, and (ii) the prevention of registrations and, where appropriate, the invalidation of registrations of the signs which, objectively, cannot constitute trademarks for intrinsic reasons (impossibility of representation, lack of distinctiveness, shape required by the nature of the goods, shape necessary to obtain a technical result, shape which gives substantial value to the product), or extrinsic ones (they must be available to everyone because they are of use to trade in general, or are misleading as to the nature, quality or geographical origin of the product/service, are protected against use in trade as being „of special public interest” and belong to, and are used by, the states, international organizations, and/or other public entities, including coats of arms, logos, seals, Olympic signs, but also those which are contrary to public order and public morality), which qualify as „absolute grounds for refusal of registration”. The grounds for refusal of registration and/or, where appropriate, for declaration of invalidity of registered trademarks on account of coming into conflict with public order or public morality in the European Union and in the USA are not few, quite the opposite, but the relevant jurisprudence is not uniform. For example, of the 81 applications for registration as trademarks of a number of signs, among them the word „mafia”, 51 were rejected, 20 were granted, and 5 are under examination, one of the applications (for the Coffemafia trademark) was granted in 2020, although in 2016-2018, the Boards Appeal and Revocation (Cancellation) of the EUIPO, and subsequently the EU Court, at the request of the Italian Republic, ruled the „La Mafia se sienta a la mesa” trademark to be invalid on the grounds that the word „mafia” was contrary to public order and its use was detrimental to public interest. However, despite the „Fack Ju Göhte” trademark being ruled to be contrary to public morality by the EUIPO and the EU Court, the Court of Justice of the European Union allowed its registration by ruling it was not contrary to public morality. In the USA, which seems to have an extremely interesting and well-reasoned jurisprudence, things aren’t any different. A number of six trademarks containing the word „Redskins” (red skin) belonging to the Washington Redskins football team (currently under a different name), registered in the 60s and 70s, challenged at registration in 1992, then in 2014, after a first decision rejecting the application, following a second application (supported by the US President and 50 senators), were revoked on the grounds of being discriminatory against the Native Americans. However, the „The Slants” (from „slanted-eye”, a pejorative term used to describe Asians) walked an entirely different path. The application (filed in 2006) to register it as a trademark for entertainment services by an all-Asian band of the same name (The Slants) was rejected by the U.S. Patent and Trademark Office - USPTO. Then, after a lengthy legal battle it was allowed for registration, with the courts, including the Supreme Court, ruling that the Lahman Act (i.e., the U.S. trademark law) provisions on the discrimination clause are contrary to the Constitution and the fundamental right to free speech. These judgments, plus another one on the sign for which registration was requested, and refused, as „CANNABIS STORE AMSTERDAM”, an EU trademark, are underlying our examination of such notions as „general/public interest”, „public order” and „public morality”, based on the finding that while important and used frequently, they are neither defined nor analysed in the legal doctrine and jurisprudence, and are used as something that needs no explanation. Such a need exists, though. After analysing them, we were able to issue our (rather critical) opinions on the EU Court judgment of 15 March 2018 that ruled the invalidity of the „La Mafia se sienta a la mesa” trademark, which we find to be wrong on the merits and, in any case, to be lacking the necessary supporting documents, while also infringing the fundamental right to free speech. However, we also found that the revocation of the „La Mafia se sienta a la mesa” trademark on the grounds of conflicting with the public order did not serve its purpose because it is not possible to prohibit the use of the sign as an unregistered trademark, because that sign is still successfully in use, because the network of restaurants that continue to use it is thriving and will even expand to other countries, and because the EU Court's decision (which probably would not have been upheld by the CJEU if appealed, as we could conclude from analysing the judgment issued in the „Fack Ju Göhte” trademark) has contributed to its growing reputation, so it may be claimed as a well-known trademark in the future, which makes the victory of the Italian Republic, which filed the application for declaration of invalidity, a bitter one. And also because the word MAFIA is at the centre of the debate, we considered it important and sought to identify its origins and uses, as well as denotations and connotations.
